• Funai Electric Co., Ltd. / Samsung Display Co., Ltd. et al. v. Gold Charm Ltd.All claims unpatentable
  PTAB · Dec 27, 2016 · IPR2015-01468 · APJ Karl D Easthom · IPR · Final written decision

  Claims 1–10 are unpatentable as obvious over Yamada because the Board found the claimed connecting structure and limitations obvious in light of Yamada.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “The record supports Petitioner’s position and the claim construction determined in the Institution Decision. The ’053 patent specification broadly describes a protrusion as having any configuration: “The configuration of the protrusion 17a is any provided that it can be connected to the GND line in the connecting substrate and the width and length of the protrusion 17a can be changed on demand.” Ex. 1001, 11:42–45. According to a general dictionary cited in the Institution Decision, the plain meaning of “protrusion” is “something that protrudes,” and “protrude” means “[t]o push or thrust outward” or “[t]o jut out; project.” Ex. 3001; Inst. Dec. 6 (citing Ex. 3001). The ’053 patent specification shows protrusions that correspond to this evidence of plain meaning. For example, Figures 6A–6C show protrusions 17a projecting from an edge of wiring pattern portion 17b of a bonding assist portion. See, e.g., Fig. 6C supra. Our claim construction and the plain meaning (as evidenced by the cited dictionary definition (Ex. 3001)) also comport with the statement in the specification that the protrusion configuration “is any” provided “it can be connected to the GND line” and “the width and length of the protrusion 17a can be changed on demand.” Ex. 1001, 11:42–45 (emphases added).” slip op. at 7

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “C. Real Parties in Interest Patent Owner argued in its Preliminary Response that Petitioner fails to name all real parties in interest (RPIs) in its Petition as required by 35 U.S.C. § 312(a)(2). Patent Owner does not present this argument in its Patent Owner Response and, therefore, has waived it. See Paper 15, 3 (“[P]atent owner is cautioned that any arguments for patentability not raised in the response will be deemed waived.). Assuming for the sake of argument that Patent Owner did not waive the RPI issue, we rely on, and incorporate, our findings and determination in the Institution Decision. See Inst. Dec. 20–28.” slip op. at 49

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable

    “that Yamada teaches connecting the bonding assist region to ground in order to eliminate electrical noise through shielding. Pet. 17 (citing Ex. 1002 ¶ 79; Ex. 1009 ¶¶ 5, 7, 22, 30). Considering the teaching in Yamada of a necessary connection to ground for shielding, Petitioner cites Mr. Flasck, who declares that “one of ordinary skill in the art at the time of the ’053 [invention] would have known that some electrical protrusion would be inherently necessary to connect the bonding assist portions to a fixed potential.” Ex. 1002 ¶ 79 (emphasis added); Pet. 17 (citing Ex. 1002 ¶ 79). Petitioner also contends that “locating a protrusion” centrally or “at a different location is nothing more than a design choice,” or skilled artisans 8 Compare Wagner, 63 F.2d at 986–87 (relying on drawings), Seid, 161 F.2d at 231 (relying on accidental drawings), Mraz, 455 F.2d at 1072 (relying on drawings), and Vas-Cath, 935 F.2d at 1566 (relying solely on design patent drawings for written description of relative proportions), with Hockerson- Halberstadt, Inc. v. Avia Group Int’l., Inc., 222 F.3d 951, 956 (Fed. Cir. 2000) (stating “it is well established that patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue.”). As discussed above, notwithstanding the reasoning in Hockerson-Halberstadt, Yamada’s specification is not “completely silent” on the issue, as it disclose ranges for wiring widths, implying all widths need not be equal. Also, notwithstanding the dicta regarding drawings, the holding in Hockerson- Halberstadt turned on patent owner’s disavowal of claim scope based on prosecution history that overcame defendant’s argument that relied on alleged drawing dimensions that the patent owner had distinguished during prosecution. See id. at 956–57. “would be guided by design options.” Pet. 36–37 (citing 1002 ¶¶ 121–122). In other words, the thrust of Petitioner’s showing as summarized in the Institution Decision is that it would have been obvious to employ a protrusion somewhere in Yamada’s bonding assist region in order to ensure a ground connection and to prevent noise––a connection that Yamada discloses. See Ex. 1002 ¶¶ 70, 72–73, 79; Ex. 1009 ¶¶ 5, 7, 22, 30; Pet. 11, 35–37; Inst. Dec. 10 (connection to ground), 11 n.4, 14 (obviousness), 18 (obviousness); see also PO Resp. 32 (joining the issue and arguing the opposite: “Yamada does not . . . teach or suggest . . . a protrusion connected to ground” as claimed in the ’053 patent). Petitioner’s contentions are persuasive to show the obviousness of connecting Yamada’s bonding assist region using a simple protrusion or contact extension, for the purpose of ensuring the electrical connection disclosed by Yamada. The claimed “connecting structure . . . comprising: . . . a bonding assist region . . . including” a “protrusion” (an electrical contact), as claims 1 and 4 recite, constitutes “the predictable use of prior art elements according to their established functions.” See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007); see also In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (“We also agree that the particular placement of the contact provides no novel or unexpected result. The manner in which electrical contact is made for Smith’s battery would be an obvious matter of design choice within the skill of the art.”).” slip op. at 32

  • Obviousness (§103) › KSR rationalesUnpatentableUnpatentable

    “Yamada’s teachings or indicate a clear intent for the layers not to have “substantially the same height,” as called for in claim 2. See Ex. 1009, Fig. 9.11 Petitioner persuasively explains that using the same material and process to create both wiring portions, wherein a PCB nominally begins with a wiring layer as Patent Owner admits, would have been obvious as a matter of efficiency in terms of bonding and would have simplified the process by using the same existing materials. See Pet. 19–20; 1002 ¶¶ 85–86, 88; Prelim. Resp. 37 (“such wirings of a printed circuit board would presumably be comprised of copper, as would be known to those of ordinary skill in the art”); Inst. Dec. 17 (discussing showing of efficiency). Yamada uses predetermined bonding assist patterns 5 to improve bonding reliability between existing wiring layers and overcome defective bonding. See Ex. 1009, Abstract, ¶¶ 6, 8–11, 24, 27, 29, 31. Yamada at least suggests forming the two wiring portions using the same material and processes at the same time: “As illustrated in Fig. 1, the wiring terminals 4 and the conductive layer 5 are formed on the PWB 1 together.” Ex. 1009 ¶ 41 (emphasis added). Notwithstanding Patent Owner’s arguments about alleged “reasons . . . to have different heights” (PO Resp. 46 (citing Ex. 2021 ¶¶ 68, 69)), Patent Owner does not address the “efficiency” reasons advanced by Petitioner for suggesting substantially the same height at the side-by-side metal regions of Yamada. See PO Resp. 45–46. 11 Patent Owner argues that Petitioner inconsistently relies on what Figure 5 portrays and ignores what Figure 9 portrays. See PO Resp. 4–5 n.1, 38. That argument overlooks that drawings must be interpreted in view of what the full disclosure portrays to artisans of ordinary skill. Also, Yamada does not disclose adding other material or different material to wiring portions 4a-h and 5. Responding to Patent Owner’s position, Petitioner relies on Mr. Flasck, who testifies that “to those of ordinary skill in the art,” Yamada teaches making the bonding assist region and terminal region of the same material and thickness. Pet. Reply 13 (citing Ex. 1009 ¶ 41; Ex. 1015 ¶ 45). As noted above, at the cited paragraph of Yamada, Yamada discloses that “the wiring terminals 4 and the conductive layer 5 are formed on the PWB 1 together.” Ex. 1009 ¶ 41. This at least suggests forming them of the same material––i.e., using the material of the printed circuit board. Mr. Flasck testifies that “to the average practitioner at the time, in this context, ‘together’ would have had the natural meaning of ‘formed of the same material at the same time.’” Ex. 1015 ¶ 46.” slip op. at 44

  Patent outcomesUS 6,909,053 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 6,909,053
• Toshiba Corp. / Samsung Display Co., Ltd. v. Gold Charm LimitedAll claims unpatentable
  PTAB · Dec 23, 2016 · IPR2015-01497 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 1–4, 8, 9, 13, and 14 are unpatentable as obvious over the ’512 Publication and APA because their combined teachings render the claimed subject matter obvious.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “Based on the record before us, we are persuaded that Petitioner explains sufficiently how the ’512 Publication and the APA together teach each limitation of each of the challenged claims (see Pet. 29–59 and evidence cited therein), as well as the reasons that a person of ordinary skill in the art would have combined those teachings (see id. at 33, 41–42, 48, 51–52, 57 (citing, e.g., Ex. 1002 ¶¶ 90, 101, 111, 118, 129, 130)), so as to meet its burden to demonstrate by a preponderance of the evidence that the subject matter of the claims would have been obvious over the proffered combination. Patent Owner’s arguments to the contrary are not persuasive.” slip op. at 20

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “In the Petition, Petitioner proposed two alternate constructions for the claim 1 term “a drive means for driving the display,” depending on whether that term is properly construed as a means-plus-function limitation under 35 U.S.C. § 112, sixth paragraph. Pet. 26–28. Patent Owner responds that neither of Petitioner’s proposed constructions is proper, but that, “for purposes of this proceeding only,” Patent Owner relies upon those constructions. PO Resp. 22–23. According to Patent Owner, “even if one of Petitioners’ proposed constructions were adopted by the Board, the Petition nevertheless fails to a [sic] establish a prima facie case of obviousness.” PO Resp. 23. In our Decision on Institution, we concluded on the record then before us that it was not necessary for our determination of whether to institute an inter partes review to construe expressly any terms of the challenged claims. Dec. on Inst. 8. Because this Final Written Decision does not turn on the construction of “a drive means for driving the display” or of any other specific claim term, we again conclude that it is unnecessary to construe expressly any term of the challenged claims. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 9

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Petitioner’s declarant, Dr. Silzars, testifies that one of ordinary skill in the art as of the July 28, 1994, the earliest claimed priority date of the ’092 patent, “would generally have had at least a Bachelor’s of Science degree in electrical engineering or physics, or equivalent, and several years of relevant experience relating to the design and fabrication of liquid crystal displays,” or, “[a]bsent a formal degree, a person of ordinary skill in the art would have additional years of work experience.” Ex. 1002 ¶¶ 13, 33; see Pet. 24 (citing Ex. 1002 ¶ 13). Patent Owner’s declarant, Dr. den Boer, essentially agrees, opining that one of ordinary skill in the art as of July 28, 1994, would have been “someone with at least a Bachelor’s of Science degree in a relevant field, such as electrical engineering, and with several years of experience in the field of design, development and fabrication of liquid crystal displays,” and stating “[i]n this specific regard, I agree with Dr. Silzars.” Ex. 2024 ¶ 9; see PO Resp. 9 (citing Ex. 2024 ¶ 9). Dr. Silzars and Dr. den Boer also agree that the person of ordinary skill in the art would understand the prior art as discussed herein. Ex. 1002 ¶ 13; Ex. 2024 ¶ 9. We determine that the differences in the declarants’ assertions are negligible and that both assessments are consistent with the ’092 patent and the referenced prior art. For the purposes of the analysis below, we adopt Dr. den Boer’s assessment.” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “Digest paper “concluded that only the dot mode polarity inversion method addresses and solves both the flicker and cross-talk problems,” “a person of ordinary skill in the art and familiar with the prior art of [the] ’092 [patent] and the SID92 Digest paper would employ dot mode polarity inversion over column inversion and row inversion, because it provides the best image quality.” Ex. 2024 ¶¶ 26–27. Irrespective of whether dot mode reversion would provide a still better image, however, we are persuaded that a person of ordinary skill in the art would have had reason, based on the APA, to add column polarity reversion to the ’512 Publication technique, in order to improve that technique in the same manner that the APA taught dot mode reversion provided an improvement over row polarity reversion. As the Supreme Court explained in KSR, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” 550 U.S. at 417. As cited above, the APA taught that row polarity reversion eliminated crosstalk, but still suffered from flicker, whereas dot mode reversion, which effectively combines row polarity reversion with column polarity reversion, eliminated both crosstalk and flicker. We are persuaded, therefore, that a person of ordinary skill in the art would have had reason to add column polarity reversion of the APA to the double row polarity reversion of the ’512 Publication, to result in the driving method claimed in the ’092 patent. We further agree with Petitioner (see Tr. 7:7–14) that Patent Owner’s arguments that “adopting portions of the APA techniques as suggested would likely have little, if any positive effect on the power consumption by the ’512 Publication display” (PO Resp. 3) and that “power consumption may actually be exacerbated by this combination” (id.) focus on the wrong comparison and do not address our finding in the Decision on Institution that one of ordinary skill in the art would have had reason to pursue a combination of the ’512 Publication’s teachings with the APA in an attempt to solve the problem of excessive power dissipation by the APA’s dot mode polarity reversion (see Dec. on Inst. 17–18). Whereas Patent Owner’s argument focuses on a comparison of power consumption between the ’512 Publication display and a display having column inversion added to the ’512 Publication (Tr. 19:25–20:2), we agree with Petitioner (see Pet. Reply 20) that the relevant comparison is instead between the combination and the dot mode polarity reversion scheme of the APA. Nonetheless, because we are persuaded by Petitioner’s arguments and evidence, for the reasons set forth above, that a person of ordinary skill in the art would have had reason to combine the teachings of the APA with those of the ’512 Publication in the manner proposed by Petitioner rather than adopting dot mode polarity reversion in its entirety, and that such a combination would have rendered the subject matter of each of claims 1–4, 8, 9, 13, and 14 of the ’092 patent obvious, we need not reach Petitioner’s further argument that a desire to reduce power consumption would have provided additional reason to make that combination.” slip op. at 25

  Patent outcomesUS 5,790,092 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 5,790,092
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Imperium (IP) HoldingsAll claims unpatentable
  PTAB · Dec 1, 2016 · IPR2015-01232 · APJ James B Arpin · IPR · Final written decision

  Claims 1, 6, 7, 14, and 16 are unpatentable as obvious over Shimada, including the obviousness-based modifications to its lookup table and photometry teachings.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “construction. Tr. 8:4–15; see also id. at 14:16–15:2 (no need to construe “preparatory power value”). Patent Owner agreed, also stating at the hearing that no claim constructions are necessary. Id. at 19:11–25; see PO Resp. 12 (relating to the claim term “interface”); Tr. 50:19–55:4. Nevertheless, Petitioner notes that the parties appear to disagree regarding the plain and ordinary meaning of the term “weighting.” PO Resp. 16–18; see Pet. Reply 15; Tr. 8:9–15. Petitioner argues that “weighting” means “‘according more weight,’ emphasizing, ‘an area of interest of the image,’ or even emphasizing the entire image.” Pet. Reply 16 (citing Ex. 1001, col. 2, ll. 15–17, col. 9, ll. 1–3; Ex. 2003, 62:10–13); see Tr. 8:24–25 (“according more weight or emphasizing a portion or all of an image”). Patent Owner does not propose expressly an alternative construction, but, in attempting to distinguish the teachings of Shimada, contends implicitly that Petitioner’s construction is overly broad. PO Resp. 18; see Pet. Reply 15 (“Though PO never actually proposes an actual construction for ‘weighting,’ it argues Shimada uses a ‘selection process’ and suggests that, in contrast, the claimed ‘weighting’ must be performed numerically.” (citations omitted)). We find Petitioner’s proposed construction to be consistent with the Specification of the ’029 patent, and we construe “weighting” to mean “according more weight or emphasizing a portion or all of an image.” Nevertheless, only terms that are in controversy in this proceeding need to be construed, and then only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Because the resolution of this controversy does not depend upon the construction of any other claim term, no other claim terms are construed expressly.” slip op. at 9

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “5 Petitioner proposes an assessment of the level of skill for a person of ordinary skill in the art. Pet. 15–16 (citing Ex. 1033 ¶ 20). Patent Owner’s declarant proposes a slightly different and somewhat lower (e.g., two years, instead of four years, of industry experience) assessment of the level of skill for a person of ordinary skill in the art. Ex. 2004 ¶ 26. To the extent necessary and for purposes of this Final Written Decision, we adopt Patent Owner’s declarant’s assessment, which each party’s declarant meets or exceeds. See Ex. 1033 ¶ 21; Ex. 2004 ¶ 27. 6 There is no requirement to enumerate each Graham factor and to include findings specifically in terms of the factors as long as “the required factual determinations were actually made and it is clear that they were considered while applying the proper legal standard of obviousness.” Specialty Composites v. Cabot Corp., 845 F.2d 981, 990 (Fed. Cir. 1988).” slip op. at 11

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “As discussed above (see supra Section IV.A.3.a.i.), Mr. Parulski explains that “Shimada takes a binary approach (either counting an area or discounting an area), utilizing the central four areas of the image in the calculation and ignoring the remainder.” Ex. 1033 ¶ 92 (citing Ex. 1005 ¶ 50). Thus, for example, the four (4) center areas may be weighted one (1), and the sixty (60) surrounding areas may be weighted zero (0). See Ex. 2003, 62:18–63:4, 78:19–84:1; see Pet. Reply 17–18. Shimada discloses “uniform” weighting (Ex. 1001, col. 8, l. 60–col. 9, l. 3), and Mr. Parulski explains that uniform weighting equally weights all areas (see, e.g., Ex. 2003, 171:13–20). See Pet. Reply 18–19. Mr. Parulski testifies that this is how Shimada operates when performing photometry uniformly on all 64 areas of Figure 4. See, e.g., Ex. 2003, 69:10–70:22; see also Ex. 1005 ¶ 50 (“[W]hen the photographic subject is in a normal state other than a backlit state, photometry is performed for a wider area.”); but see Ex. 2004 ¶¶ 42–47. We credit Mr. Parulski’s testimony here. Thus, we are persuaded that Shimada teaches “weighting” as that term is here construed. In its Figure 4, reproduced above (see supra Section IV.A.2.), Shimada further depicts a square imaging element measuring eight “areas” on a side and totaling sixty-four (64) areas. As noted above, Petitioner argues persuasively that Shimada teaches assigning numerical values to each of these areas. Pet. Reply 19 (citing Ex. 2003, 69:10–70:22). Further, Mr. Parulski testifies that: Shimada further describes that “the size of the photometric area substantially may be selected by processing only the signals of the required photometric area.” [Ex. 1005 ¶ 50.] It would have been obvious to a POSITA that Shimada’s disclosure of “processing only the signals of the required photometric area” could advantageously be accomplished by using a memory having “luminance weighting tables” with binary values (e.g., “0” or “1”), which enable the CPU to identify the photometric areas to be included in the processing. Ex. 1033 ¶ 115; see Ex. 2003, 84:11–94:11; see also KSR, 550 U.S. at 417 (“If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.”). Again, we credit Mr. Parulski’s testimony. Thus, we are persuaded that such an assignment of numerical values discloses a “weighting table,” such as that recited in challenged claim 16, and that a person of ordinary skill in the art would understand, in view of Shimada’s teachings, that such numerical values might be stored in a memory in the form of a table. Pet. 41 n.36; see Pet. Reply 19 (“Claim 16 differs from claims 1, 6 and 7 in that it requires a memory storing a “weighting table.”).” slip op. at 35

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “power values to determine the main flash values presented in Table 1, that such values must be stored within and/or accessible to Shimada’s system, and that Shimada teaches that storage capacity was a concern in the art. Ex. 1005 ¶ 34; see Ex. 2003, 33:7–34:11, 40:9–15. Shimada expressly teaches that two of the pieces of data used to accomplish Shimada’s purpose may be stored in a single memory, ROM 16 of Shimada’s Figure 1. Ex. 1005 ¶¶ 20, 32, 42. Based on the art and arguments presented here, the record suggests a finite number of ways in which distinct pieces of data (e.g., the main flash duration and power values, the preparatory flash duration, and the preparatory flash power values) may be stored and that these would be within the technical grasp of a person of ordinary skill in the art. Ex. 2003, 44:7–45:17, 46:5–47:6; see Tr. 37:3–38:6. On this record, we are persuaded that a person of ordinary skill in the art would have understood that saving information in one file, instead of two or more files, has the ability to conserve storage space. KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”), 421 (“When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp.”); see Ex. 1005 ¶¶ 34, 35 (describing known problem of, and solutions for, storage capacity).” slip op. at 21

  Patent outcomesUS 7,092,029 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,092,029
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Imperium (IP) HoldingsAll claims unpatentable
  PTAB · Nov 30, 2016 · IPR2015-01233 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 1 and 10 are unpatentable: claim 1 is anticipated by Roe and Toshiba, and claim 10 is obvious over Umeda or Sears combined with either Roe or Toshiba.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “Having considered the parties’ arguments, we agree with Samsung that the broadest reasonable interpretation of “interface” in light of the specification of the ’290 patent is “a connection used for communicating signals between two or more electrical components,” and we expressly decline to read into claims 1 and 10 requirements that the recited interfaces (1) must perform a data interfacing function “in accordance with a protocol that is recognized and implemented by both the transmitting device and the receiving device” and (2) necessarily must be “higher-level circuits,” as Imperium suggests. Id. at 2, 6–8; PO Resp. 12–13; see Hoganas AB v. Dresser Indus., Inc., 9 F.3d 948, 950 (Fed. Cir. 1993) (“It is improper for a court to add ‘extraneous’ limitations to a claim, that is, limitations added ‘wholly apart from any need to interpret what the patentee meant by particular words or phrases in the claim.’” (quoting E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988))).” slip op. at 14

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “We are persuaded by Samsung’s arguments and evidence presented in the Petition that Roe’s dual-purpose I/O circuit discloses the “data interface circuit” of claim 1 of the ’290 patent, including single-ended and differential interfaces with selectable outputs arranged as set forth in claim 1, and neither Imperium’s arguments nor its cited evidence persuade us otherwise. See Pet. 17–25; PO Resp. 16–22. As stated in Section II.A.2 supra, we agree with Samsung that the broadest reasonable interpretation of the term “interface,” as recited in claim 1 of the ’290 patent, is “a connection used for communicating signals between two or more electrical components,” and we do not read into claim 1 any requirement that the recited interfaces must be a “higher-level circuit” that performs a data interfacing function in accordance with any particular protocol. Accordingly, we are not persuaded by Imperium’s arguments or Dr. Wright’s testimony that Roe’s I/O circuits are not “interfaces” within the meaning of claim 1. PO Resp. 16–20. We also agree with Samsung that claim 1 does not require sending the selected mode to a downstream receiver. Pet. Reply 12. Accordingly, we are not persuaded by Imperium’s argument that Roe does not describe “sending selection signals to any components on the downstream/receive-side of the output lines.” PO Resp. 21. Additionally, because we understand Samsung to rely on Roe’s “dual-purpose I/O circuit” to disclose the claimed “data interface circuit” (see Pet. Reply 12), we are not persuaded by Imperium’s argument that Roe’s “primary interface itself” does not have selectable single-ended and differential components (PO Resp. 21). c. Conclusion For the foregoing reasons, we conclude that Samsung has shown by a preponderance of the evidence that claim 1 is anticipated by Roe.” slip op. at 21

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “ordinary skill in the art, adopted in Section II.C.3.b supra, as well as the testimony of both Dr. Wright (Ex. 1040; Ex. 1046; Ex. 2008) and Dr. Baker (Ex. 1008; Ex. 1041; Ex. 2007), we are persuaded by Samsung’s arguments and evidence that it would have been within the skill of a person of ordinary skill in the art to incorporate a dual interface as taught by either Roe or Toshiba into Umeda’s image sensor. We also agree with Samsung that Umeda, Roe, and Toshiba are analogous art with respect to claim 10 of the ’290 patent. See Pet. Reply 17–18; PO Resp. 29. As Samsung points out (Pet. Reply 17), the question of whether prior art references are “analogous” is evaluated with respect to the claimed invention, not with respect to other references. See, e.g., Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011) (“A reference qualifies as prior art for a determination under § 103 when it is analogous to the claimed invention.”). A prior art reference is considered to be analogous to a claimed invention if it is either: (1) from the same field of endeavor, regardless of the problem addressed; or (2) reasonably pertinent to the particular problem with which the inventor is concerned, regardless of the field of endeavor. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). In this case, we determine that Umeda is analogous art with respect to claim 10 under at least the first prong of Bigio, and that Roe and Toshiba are both analogous art under at least the second prong. In particular, Umeda generally describes solid state image sensors, including CMOS-type image sensors, that include a data interface circuit and an image processor connected to the image sensor to receive the signals output by the data interface circuit (see supra Section II.C.3.a and citations therein), which are within the same field of endeavor as the CMOS imaging apparatus of claim 10. Moreover, because each of Roe and Toshiba discloses an interface that provides selectable single-ended and differential signal output with reuse of output pins, we find that those references clearly are pertinent to the problem set forth in the ’290 patent, namely fulfilling a “need for an improved interface circuit that would allow either a single-ended or a differential output and using as few pins as possible” (Ex. 1001, 3:17–19; see also id. at 1:11–15 (“The field of the invention relates generally to the field of interface circuits, and more particularly, to interface circuitry for providing selectable single-ended and differential signal output from a CMOS image sensor to an external digital signal processor.”)).” slip op. at 37

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “We are persuaded, moreover, that a person of ordinary skill in the art would have had reason in view of Umeda’s teachings, as cited by Samsung, to make the proffered combinations. See, e.g., Ex. 1006, 1:61–67 (stating the goal of “mak[ing] the most of the[] characteristic features” of a MOS type image sensor and the importance of using “an appropriate interface” to avoid increases in chip area, package size, and cost), Fig. 14 (listing both single-ended (“PC Card”) and differential (“IEEE 1394”) interface types). We conclude that the recited combination of claim 10 is no more than “the predictable use of prior art elements according to their established function,” and that a person of ordinary skill in the art would have been prompted to combine those elements in the claimed fashion. KSR, 550 U.S. at 417, 418. We, accordingly, are persuaded that Samsung has shown that the first three Graham factors weigh in favor of finding that Umeda in combination with either Roe or Toshiba would have rendered the subject matter of claim 10 of the ’290 patent obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 38

  Patent outcomesUS 6,836,290 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,836,290
• Alarm.Com Inc. v. Vivint, Inc.Institution denied
  PTAB · Nov 23, 2016 · IPR2016-01091 · APJ James B Arpin · IPR · Institution

  The Board denied institution on claims 1–21, exercising its discretion because this third petition used earlier responses and decisions to refine challenges.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied

    “Patent Owner contends that Petitioner used our decisions in the earlier cases as a roadmap for attempts to remedy deficiencies in its earlier petitions. Prelim. Resp. 4–5, 15–16. Patent Owner points to Petitioner’s discussion of its earlier unsuccessful challenges to claims 1–21 of the ’513 patent as evidence of Petitioner’s improper use of our decisions in an effort to perfect its present challenges. Id. We agree. Further, Petitioner acknowledges that the instant Petition attempts to refine the construction of the term “message profile containing outgoing message routing instructions” in view of our construction of that term in our decision to institute review in challenges, based on Shetty, to claims in Case IPR2016-00116. Pet. 17 n.5. Petitioner also provides no explanation as to why claims 1–21 of the ’513 patent could not have been challenged over Shetty and Joao, alone or in combination with Britton and or Garton, in the ’129 petition or in a contemporaneously filed petition. Thus, the instant Petition is essentially a composite response to our decisions in those earlier proceedings. Petitioner also offers no other explanation for the length of time that elapsed between the time it learned of the referenced art here asserted, i.e., at least November 2, 2015, and the filing date of the instant Petition, i.e., May 24, 2016. Because the instant Petition was filed only about one week prior to the raising of the Section 315(b) bar against further challenges to claims 1–21 of the ’513 patent, we can discern no other motivation apart from the information to be gleaned from Patent Owner’s preliminary responses and our decisions on institution in the related cases. See Prelim. Resp. 16–17.” slip op. at 10

  Discretionary denial
  Patents in suitUS 6,717,513
• Alarm.Com Inc. v. Vivint, Inc.Institution denied
  PTAB · Nov 17, 2016 · IPR2016-01080 · APJ Charles J Boudreau · IPR · Institution

  The Board denied institution for claims 3, 16, 24, 32, 42, and 43 because serial petitions, prior decisions, and inconsistent-decision risks favored exercising discretion.

  RulingsInstitution decision

  • Other 314aInstitution denied discretionary otherInstitution denied

    “received both Vivint’s preliminary responses and our decisions in Cases IPR2015-02004, IPR2016-00116, and IPR2016-00155, explaining why its earlier challenges to claims 3, 16, 24, 32, 42, and 43 were deficient, before filing the instant Petition. In addition, Alarm.com had received Vivint’s preliminary responses and our decisions in other cases in which the applied Shetty and Britton references were asserted. Thus, the instant Petition is essentially a composite response to our decisions in those earlier proceedings. Alarm.com also offers no other explanation for the length of time that elapsed between the time it learned of the referenced art here asserted, i.e., at least November 5, 2015, and the filing date of the instant Petition, i.e., May 20, 2016. Because the instant Petition was filed only about two weeks prior to the raising of the Section 315(b) bar against further challenges to claims 3, 16, 24, 32, 42, and 43 of the ’601 patent, we can discern no other motivation apart from the information to be gleaned from Vivint’s preliminary responses and our decisions on institution in the related cases.” slip op. at 10

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied

    “B. Conclusion For the reasons discussed above, and given the limited resources of the Board, we exercise our discretion not to institute review in this proceeding. See 35 U.S.C. § 314(a); 37 C.F.R. § 42.108. IV. ORDER Accordingly, it is ORDERED that the Petition is denied and no trial or inter partes review is instituted for claims 3, 16, 24, 32, 42, or 43 of the ’601 patent on any asserted ground.” slip op. at 14

  Discretionary denial
  Patents in suitUS 6,147,601
• Arris International PLC / Pace Ltd. et al. v. Sony CorporationInstitution denied
  PTAB · Oct 7, 2016 · IPR2016-00828 · APJ Bart A Gerstenblith · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claim 2 was unpatentable under any of the four asserted obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “only if “the information presented in the [P]etition . . . and any [Preliminary Response] . . . shows that there is a reasonable likelihood that the [P]etitioner would prevail with respect to at least 1 of the claims challenged in the [P]etition.” See 37 C.F.R. § 42.108(c). For the reasons given below, on this record, Petitioner has not established a reasonable likelihood of prevailing with respect to at least one challenged claim of the ’295 patent. Accordingly, we deny the Petition and decline to institute an inter partes review of the ’295 patent.” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “Petitioner fails to acknowledge that Allport already provides a different solution to the problem identified by Petitioner—of channel retention in the event of a power interruption—by storing the channel information in the remote control. In other words, Allport already addresses the alleged problem/need that Petitioner asserts would provide a motivating reason to seek a solution, and Allport also provides a workable solution by maintaining the channel information in the memory of the remote control. Petitioner does not allege any deficiency of Allport’s remote control-side arrangement such that modifying it as proposed would result in some type of benefit.” slip op. at 16

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “last channel, his testimony is the only evidence as to why one of ordinary skill in the art allegedly would have incorporated the feature in the base station and not the remote control. In short, he opines that it would be “simpler” because the base station manages the tuning and selection features, and could therefore respond quickly. See id. One significant problem we have with Dr. Russ’s testimony is that he—like Petitioner—fails to acknowledge that Allport’s remote control already stores channel tuning information. In other words, if we were starting from a blank slate (i.e., if Allport had not specified where channel tuning information is stored), Dr. Russ’s testimony might hold more weight—although we would still have the potential problem, identified below, regarding exactly why such incorporation would be simpler—but, as noted above, we are not starting from a blank slate because Allport already stores channel information in its remote control. Thus, we give Dr. Russ’s testimony on this point very little weight. Additionally, as noted above, Dr. Russ fails to explain why storing the last channel would have been simpler in the device responsible for the tuning and selection features (i.e., Allport’s base station) than in Allport’s remote control. In other words, a user would presumably enter the channel information on the remote control and it too would have a direct role in channel selection. Thus, even if we were starting from a blank slate, Dr. Russ’s statement that it would be simpler to incorporate said feature in Allport’s base station is unsupported by sufficient explanation or evidence.” slip op. at 17

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “We agree with Patent Owner that Margulis does not explicitly disclose that subsystem processor 518 “selects said television signal or said Internet data to produce said information signal,” as recited by claim 2. See id. at 13. In describing Figure 1, Margulis states: “Switcher 138 then preferably selects one or more of the program sources 112 as a switcher output program in response to control information typically provided by a viewer of the system 110.” Ex. 1009, 4:58–61. Margulis’s Figure 1 illustrates switcher 138 as a separate and distinct component from base station 156. Margulis, Fig. 1. Margulis’s Figures 5 and 6, the description of which Petitioner relies upon (see Pet. 27–28), specifically point back to base station 156 of Figure 1. See Ex. 1009, 7:5–7 (“Referring now to FIG. 5, a block diagram of the FIG. 1 wireless base station 156 is shown . . . . In the FIG. 5 embodiment, wireless base station 156 preferably includes, but is not limited to, a base station subsystem 1 (512(a)) through a base station subsystem N (512(c)[)] . . . .”); id. at 9:1–3 (“Referring now to FIG. 6, a block diagram of an exemplary base station subsystem 512 is shown . . . .”). In short, it appears that Margulis describes the elements of Figures 5 and 6 as though they are a part of the overall system shown in Figure 1. Margulis’s use of the same reference numeral for the base station—156—in Figures 1 and 5 and same reference numeral for the base station subsystem—512—in Figures 5 and 6, support the same conclusion. See 37 C.F.R. § 1.84(p)(4) (“The same part of an invention appearing in more than one view of the drawing must always be designated by the same reference character, and the same reference character must never be used to designate different parts.”). Additionally, and notably, Petitioner does not argue that Figures 5 and 6 illustrate something other than additional details regarding the overall system shown in Figure 1. And, as discussed above, Petitioner’s citations to subsystem processor 518 do not state explicitly that subsystem processor 518 performs the functions attributed to switcher 138 or as required of the selection unit recited in claim 2 of the ’295 patent. Accordingly, we determine that, based on the record before us, Petitioner has not shown a reasonable likelihood that it would prevail in establishing the unpatentability of claim 2 as obvious over the combination of Margulis and Zato.” slip op. at 23

  § 102 anticipation§ 103 obviousness
  Patents in suitUS 7,733,295
• Arris International PLC / Pace Ltd. et al. v. Sony CorporationInstitution denied
  PTAB · Sep 28, 2016 · IPR2016-00827 · APJ Bart A Gerstenblith · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of proving claims 41, 42, 47, or 48 obvious over any asserted combination.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Under 35 U.S.C. § 314(a), an inter partes review may be instituted only if “the information presented in the [P]etition . . . and any [Preliminary Response] . . . shows that there is a reasonable likelihood that the [P]etitioner would prevail with respect to at least 1 of the claims challenged in the [P]etition.” See 37 C.F.R. § 42.108(c). For the reasons given below, on this record, Petitioner has not established a reasonable likelihood of prevailing with respect to at least one challenged claim of the ’898 patent. Accordingly, we deny the Petition and decline to institute an inter partes review of the ’898 patent.” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “We agree with Patent Owner that, for the purposes of determining whether to institute an inter partes review of the ’898 patent, we need not decide whether “data bus” requires multiple receiving devices or excludes a point-to-point communication path. The apparent3 disagreement between the parties with respect to the construction of “data bus” that impacts our determination here is whether “data bus” requires a wired data communication path or whether it is broad enough to encompass a wireless data communication path. The ’898 patent claims priority to a Japanese patent application filed May 24, 1994.4 The ’898 patent discusses transmitting various data to a data bus, but does not describe said data bus as wireless. See, e.g., Ex. 1001, 2:3– 24. When the ’898 patent refers to a data bus, the specification uses language that suggests a physical structure. See, e.g., id. at 2:3–6 (“a method for communicating video data via a data bus between a master device and a slave device which are each coupled to the bus” (emphasis added)); see also id. at Figs. 1 and 5 (illustrating data bus 24)). Petitioner’s extrinsic evidence is consistent with the notion that a data bus is a physical structure. Pet. 16 (“A bus is always designed to attach multiple devices . . . .” (quoting Ex. 1018 (emphasis added))). 3 We use the phrase “apparent disagreement” because Petitioner does not address directly the question of whether a “data bus” is limited to wired paths, but in light of Petitioner’s third ground of challenge, discussed infra, we understand Petitioner’s position as construing “data bus” to encompass wireless paths as well. 4 Petitioner relies upon May 24, 1994, as the ’898 patent’s priority date. Pet. 4. In light of the intrinsic and extrinsic evidence in the record, we agree with Patent Owner that one of ordinary skill in the art would have understood “data bus” to mean “a wired data connection path.”5” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “reasonable likelihood of prevailing on this ground. “[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In particular, “there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Id. (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Here, Petitioner identified the generic reason of providing additional security and control access measures although Petitioner has not provided any evidence or argument that the security provided by Hamilton was deficient or that there was some need or problem that existed and to which one of ordinary skill in the art would have sought, and been prompted to rely upon and apply, Kung’s teachings. Were Petitioner’s “reason” enough, any additional level of security would necessarily be obvious to add to Hamilton’s disclosure. Without more, however, we are at a loss as to why one of ordinary skill in the art would have sought to add Kung’s authentication procedure to Hamilton’s disclosure when Petitioner asserts that Hamilton already discloses an authentication procedure. Dr. Russ’s testimony, although speaking of “replay attacks,” does not explain what they were, as of 1994; does not provide support for his testimony that “replay attacks” were a concern to those of ordinary skill in the art as of 1994; does not indicate or explain why Hamilton’s security features do not adequately prevent replay attacks; and does not explain why the alleged additional security and control access measures of Kung would have been an improvement or otherwise provide a benefit over the security features described by Hamilton.” slip op. at 18

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “As cited above, Petitioner relies on Dr. Russ’s testimony. Dr. Russ’s testimony, however, is largely the same as Petitioner’s argument, but does offer one additional point when stating: Kung “assigns a random number known only to both parties and established only in the context of a specific piece of premium content. . . . [S]ince a new number is established each time premium content is requested, a pirate cannot reuse old random numbers. This prevents well-known ‘replay attacks.’” Ex. 1003 ¶ 160.” slip op. at 17

  Claim construction§ 103 obviousnesscites Phillips · KSR
• Alarm.Com Inc. v. Vivint, Inc.Rehearing denied
  PTAB · Jul 28, 2016 · IPR2016-00161 · APJ Charles J Boudreau · IPR · Rehearing

  The Board denied rehearing and maintained its decision not to institute review of claims 11–13, 15, 16, 19–21, 23, and 24 because the asserted art did not teach the claimed device identification codes.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). The burden of showing a decision should be modified lies with the party challenging the decision, and “[t]he request must specifically identify all matters the party believes [we] misapprehended or overlooked.” 37 C.F.R. § 42.71(d). A request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence. Moreover, it is not an abuse of discretion to have performed an analysis or reached a conclusion, with which Petitioner disagrees; mere disagreement with our analysis or conclusion is not a proper basis for rehearing.” slip op. at 3

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “unpatentable, Petitioner cited Shetty’s disclosure that “the user may be notified by an electronic mail message or report 114 or by a[] pager report via a pager 116 or by a facsimile report 122” (Ex. 1103, 2:46–48), and Levac’s disclosures that “the message template with the variable value may be submitted to message server 14 through user interface 20 and message file generator 23 as a .msa file,” which “can then be stored in variable database 29 to await receipt of variable data”; and that “[p]referably, the .msa file created by message file generator 23 may incorporate . . . the following information: 1. OWNER: identifies the user who created the file . . . . 10. DESTPARAMS: supplies a list of destination parameters, such as recipient site location, required for transmitting the message to the destination” (Ex. 1105, 4:48–52, 5:49–53, 11:8–13). Pet. 38–39. In our Decision on Institution, we agreed with Patent Owner’s argument in its Preliminary Response that the evidence cited by Petitioner does not teach or suggest storing “communication device identification codes of all of said user-defined communication remote devices,” explaining that we could find in Petitioner’s cited evidence no suggestion that either Shetty’s “user profile database” or Levac’s “variable database” store anything that could be termed “communication device identification codes” under any reasonable interpretation of that term. Dec. on Inst. 40. In particular, we found that Shetty describes storing user profiles containing definitions of “how to send a notification to [an] associated user,” but that those definitions would, at most, identify addresses such as for e-mail messages or reports or telephone numbers such as for pager reports or facsimile reports,5 not the recited “communication device identification codes.” Id. at 40–41. We also explained that we agreed with Patent Owner that neither identification of the user who created a file, as in the “OWNER” field of Levac’s variable database, nor supplying parameters such as recipient site location, as in Levac’s “DESTPARAMS” field, teaches or suggests “communication device identification codes.” Id. at 41.” slip op. at 4

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “that a user may be notified by “an electronic mail message or report 114 or by a[] pager report via a pager 116 of by a facsimile report 122,” and Levac discloses storage of identification of the user who created a file and “recipient site location,” we disagree with Petitioner’s premise that Shetty’s and Levac’s disclosures are “identical to the preferred embodiment of the ’654 Patent” for the “communication device identification codes” limitation of claims 11 and 19.” slip op. at 6

  § 103 obviousness
  Patents in suitUS 6,462,654
• Mitek Systems, Inc. v. Rothschild Mobile Imaging Innovations, LLCAll claims unpatentable
  PTAB · Jul 20, 2016 · IPR2015-00622 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 1–31 are unpatentable as obvious: claims 1–3, 7–10, 12–13, 15–16, 19–23, 25–26, 30–31 over Fukunaga and Safai; remaining claims over the specified combinations.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “establish a prima facie case of obviousness based on a combination of elements disclosed in the prior art, the Board must articulate the basis on which it concludes that it would have been obvious to make the claimed invention. In practice, this requires that the Board explain the reasons one of ordinary skill in the art would have been motivated to select the references and to combine them to render the claimed invention obvious.” (emphasis added, internal citation and quotation marks omitted)). A technical expert need not articulate the Graham factors to offer testimony on obviousness so long as our findings are guided by those factors. Although the ultimate conclusion of obviousness of a claimed invention is based on all underlying inquiries outlined in Graham, that ultimate conclusion of obviousness is a question of law with respect to which we do not rely on expert testimony. As we explain above, we have considered the evidence, including Dr. Essa’s testimony, and make our findings in the context of the Graham factors. Moreover, Dr. Essa explains in a cogent and persuasive manner in paragraphs 37, 40, and 44 of his Declaration why a person of ordinary skill in the art at the time of the alleged invention of the ’163 patent would have been motivated to modify the components that operate as an input module of the user terminal (e.g., camera-equipped cellular phone) described in Fukunaga to enable a user to input storage location information regarding each captured image; to include a storage address as part of the “additional information” Fukunaga attaches to an image; and to modify the transmission components of the user terminal of Fukunaga to transmit the inputted associated information with the digital image to the external server for storage, based on the disclosure of Safai, and in view of the fact that Fukunaga and Safai are similarly directed to systems and techniques for storing and retrieving digital images in a server. We are persuaded by Dr. Essa’s reasoning that the modification of Fukunaga to enable a user to input storage location information in the manner described by Safai would have provided the benefits of allowing a user to control and specify the location that each image is stored, providing organization and management for image files and associated information, and helping to facilitate retrieval of such information. See id. ¶ 37. We also are persuaded by Dr. Essa’s reasoning that a skilled person would have been motivated to look to Safai to modify Fukunaga’s disclosed system and processes to associate a storage address with an image, as disclosed by Safai (see, e.g., Ex. 1004, 11:22–26), particularly given that Fukunaga already discloses associating other information with the an image (see, e.g., 6:48–7:17), and then to transmit the inputted associated information with the digital image file to the external server for storage. Ex. 1010 ¶¶ 40, 44. As Dr. Essa explains, “associating a storage location with an image would have informed the server that stores the image of the precise location to store the image, which may, for example, facilitate image organization and retrieval,” and transmitting that information to the external server for storage would allow the server to store that data for later use in retrieving the image and associated information. Id. We agree further that one skilled in the art would have understood that modifying Fukunaga’s system in such a way would “have been a common sense and predictable modification that was within the realm of knowledge of [such a person] at the time of the alleged invention.” Id. ¶ 40.” slip op. at 39

  • Skill levelOther

    “2. Level of Ordinary Skill in the Art The Petition does not take a position on the level of ordinary skill in the art, although Dr. Essa states his opinion in his Declaration. See Ex. 1010 ¶ 11. Patent Owner does not take a position on the level of ordinary skill. With regard to the level of ordinary skill in the art, we determine that no express finding is necessary and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 21

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “We disagree with Patent Owner’s assertion. Although we construed “storage location information” in the Decision to Institute, we did not separately construe the complete phrase “storage location information being indicative of a storage location on a separate external computing device.” See Dec. 8–10. Substituting the construction of “storage location information” provided in our Decision to Institute into the recited limitation, we do not obtain Patent Owner’s asserted “marked-up version,” but instead obtain: an input module disposed on the camera device for inputting information identifying where data may be stored regarding each captured image, the information identifying where data may be stored being indicative of a storage location on a separate external computing device for storing each digital image after transfer from the digital imaging camera device. Patent Owner does not articulate, nor can we discern, any meaningful difference between “the information identifying where data may be stored being indicative of a storage location on a separate external computing device” and Patent Owner’s suggested construction. To the extent that Patent Owner suggests elsewhere in its Response that the claims require the “storage location information” to indicate a particular location within the recited “separate external computing device”—such as a specific folder within the file system of a “service server” (see PO Resp. 25)—we agree with Petitioner both that the claims and Specification of the ’163 patent do not require indication of an “exact location within” an external device and that even the adoption of Patent Owner’s proposed construction would not so limit the claim scope (Reply 2). Accordingly, we determine that there is no need to construe expressly “storage location information being indicative of a storage location on a separate external computing device” except as follows directly from our construction of “storage location information” provided in the Decision to Institute. Only those terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “We conclude that “inciting or providing a cue” is consistent with the Specification. For example, the Specification states that “[t]he prompting step includes displaying at least one question to the user or audibly producing at least one question to the user.” Ex. 1001, 2:41–43. In another example, “the display module may include an audio output device for audibly prompting a user to input information regarding the captured image.” Id. at 2:6–8. Thus, “prompting” means “inciting or providing a cue.” We note, however, that the parties’ respective proposals do not capture the actual dispute as to the meaning of “prompting.” Rather, Patent Owner, in distinguishing Fukunaga (discussed below), argues that Fukunaga describes a user selecting a menu if voice information is to be attached to an image. PO Resp. 35–36. At the oral argument, although Patent Owner would not commit to precise language it would use to make this distinction, Patent Owner essentially argued that the prompting must be automatic, or without any action on the part of the user between capturing an image and prompting the user to input information. Tr. 36:4–37:25. We find no such requirement in the ordinary meaning of “prompting,” as evidenced by Patent Owner’s dictionary definition. Patent Owner also does not point to evidence in the Specification that would support its position. In its most detailed example, describing a user taking pictures of his wife and child during a trip to Las Vegas, the Specification explains that [a]t end of taking pictures or alternatively, immediately after taking each individual picture, the user goes back to the device 100, 200 and using either keystroke input via input module 124 or voice recognition software via a microphone, or any other input means the user is prompted to provide . . . information regarding the pictures, i.e., the images taken (step 304)[, including a file location to store the pictures].” slip op. at 13

  Patent outcomesUS 7,450,163 unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 7,450,163

Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.